Search 500,000 Documents, Review 160,000 Pages In 20 Hours, And Then Do It All Over AgainQuentin Hardy,
06.24.02

The detailed life of a patent examiner.

"Sometimes I'm the judge and jury," says Patrick Nolan, an eager man presiding over 175 different claims for the advancement of civilization. But that is not the real pleasure of judging invention, he says. "I get to see things before they happen."

Nolan, and some 3,300 other patent examiners like him, are our nation's official arbiters of what constitutes invention, what a person or a company may claim they have done that no one has done before. At least, not on the record. These Americans (all are required to be citizens) are the gatekeepers of our economy's future, Nolan declares as he looks back at more than 6.3 million approved inventions, and forward to an onrush of new claims.

The U.S. Patent and Trademark Office (USPTO) receives 2 million documents yearly, including 375,000 applications, amendments to existing claims, and pleas for consideration or appeals for reconsideration. Those join more than 190,000 patents that will be granted this year, in regular announcements each Tuesday. Every one of the new and pending claimants wants attention now; the cramped and frantic postal facility, occupying one of 18 USPTO buildings dispersed over a one-mile swath in Crystal City, Virginia, is the world's largest recipient of Express Mail. The office window gets particularly busy around midnight, just before it shuts.

To that urgency add a dizzying increase in complexity of new claims. A typical patent is now about 20 to 40 pages, up from the single-page descriptions of 1790, when Thomas Jefferson and two friends met monthly as America's first patent examiners (approving three inventions that year, the first for converting wood ashes into farm fertilizer). Some biotechnology patents now carry 160,000 pages of information.

"I love the tradition of this office," says James Rogan, a former Los Angeles County prosecutor, state court judge, and congressman who served on intellectual-property subcommittees and who was appointed last year as director of the USPTO. On the walls outside his office, framed like portraits, hang renderings of early patents--each contained on a single sepia--toned page. "We get CDs now containing the equivalent of 72,000 pages. The number and fundamental complexity of our patents are becoming too great." In the 1980s, efficiency was improved, he says, cutting the wait time from filing to approval from 25 months to 18 months. But the wait has crept back to more than 24 months. One difficulty in trying to streamline the process, Rogan adds, is that "the complexity of patents in the time of Reagan was fishhook design compared to now."

Not only did the annual growth rate of the number of applications expand from 8% in the 1990s to 12% in 2000 and 2001, applications for complex biotech patents have jumped 24% during the past two years. Electrical-technologies applications have risen even higher.

About half of the 400 people working in the biotech, organic chemistry, and pharmaceutical section--Nolan's section--have Ph.D.s. But they still struggle to keep up with the latest developments in their fields. Nolan, who got his doctorate in biology in 1997, specializes in physiology, endocrinology, and immunology patents.

He joined the patent office immediately rather than pursue a postdoctorate in pure research. The starting pay, $45,000 a year, was twice what he was offered at a competing postdoctorate job; today he makes almost $90,000 and within reason gets to make his own hours. "I get every Friday off, and the benefits are good," he says, sipping a can of diet grapefruit soda. "I get one hour every two weeks to stay on top of the art."

In his sparse office, with two houseplants, a baseball poster, and one of the largest databases available, he seems firmly in control, even in the path of the avalanche of invention. More than anything, he depends on the USPTO's technological system.

Nolan's computer accesses vital information on all approved patents; the complete information of eight large industrial databases, each following the latest published research; more than 700 commercial databases offering less-rigorous information; 8,000 electronic books; and 700 journals.

When a biotech claim hits Nolan's desk, his first search for related information on the subject brings up 500,000 possible documents. Refining the search, he ends up reviewing about 50 articles related to the claim. It would be nice to know everything, but he must review each patent generally within 20 hours and print out his findings. This is where the digital search ends and a cumbersome paper trail begins.

"I've spent 40 or 50 hours on some of these--those are the real dogs," he says. These are the inventions that are massively complex, or so novel that they don't fit in the expected path of invention, and they mess with the urgency at the office. The apparent quiet on Nolan's floor is itself telling: no joking or socializing, just one small room after another of highly schooled examiners battling through ever more, ever thicker, files that have to move through the system.

"It's not hard to get a balanced disposal once you learn how," Nolan claims. Chiefly, as a patent examiner, you learn how by following the rules. Stick to the database. Check the plausibility of the claim. See if it fits with where the technology has been and where it's likely to go--a good examiner knows where his technology was five years ago, and what's expected to happen in the next five, since even inspiration comes in some kind of context. Consult your supervisor or other examiners when necessary. Call the inventor's lawyers and ask for clarification.

Rules help keep you from getting scared in the face of all the technological and legal invention that is pouring into the American patent system. So, perhaps, does perspective. Nolan may indeed oversee official acknowledgment of the next great "secret of life," but the one visible label on his overstuffed shelf of pending files reads simply "Botox," the botulism-related wrinkle smoother. Nolan gets to see the future, but he's mum on how it looks.

The idea of the lone inventor toiling away at his bench to change the way we live is as far removed from modern life as the small family farm is from agribusiness. It costs more than $2,000 to get a patent on a so-called major entity, and that's not counting attorneys' fees, fighting off counterclaims, or the time spent waiting for that special Tuesday announcement.

When a patent is first filed, the key hurdles are novelty and obviousness; i.e., does this idea really represent something new, and is it informed by a particular creativity? Eighty percent of patent applications are rejected for failing to meet those first hurdles. For the ones that pass, then it's a question of negotiation, as the inventor fights for a maximum possible economic benefit, and the examiner limits what he will allow.

"They almost always get less than they ask for," says Nolan. "They want to see how far they can go, and almost anything I give them is going to limit what somebody else can do."

As bad as leaving it up to the lawyers may sound, it is nothing new. On Valentine's Day of 1876, Elisha Gray filed for a telephone apparatus two hours after Alexander Graham Bell. Bell got the patent after years of litigation, even though his original design didn't work and Gray's did--leaving history with folks using the Bell System instead of the more poetically charged "Gray System."

Even when absurd, the application must be honored, or the process would break down. Witness the recently awarded patent No. 6,368,227, for a new way to suspend oneself on a tree swing (granted to the 6-year-old son of a patent attorney in St. Paul, Minnesota). No word on how well this patent scored on "usefulness," another longtime test for approval. Nolan's office once received a patent that listed the codiscoverer as "Heavenly Father." That claim was refused, but then, the deity lacks legal representation.

The system makes all else possible. Esther Kepplinger, deputy commissioner for patent operations and self-described "supervisor of supervisors of supervisors," was one of fewer than ten examiners doing biotech patents 30 years ago; she has overseen a fifty-fold increase in demand and specialization. Still, she says "when you're experienced at this, you can make decisions whether you know the art or not," a process she compares with a court's ruling on antitrust in high technology.

The paper must go through, and not just for the $1.2 billion in filing fees through which the USPTO funds itself (or would, if Congress didn't play with those funds). Director Rogan figures this creation of intellectual property ("people forget the second word when they say that phrase") is one of the country's greatest strengths, "the way we moved from an agrarian economy to an international power.

"We tell inventors, 'Instead of keeping your idea locked up, you tell how you did it, so someone else can do it,'" Rogan says, maintaining that patent protection, with its costs and lawyers, its careful Nolans, are all a necessary part of the process.

Not that the harried process doesn't need rethinking. "I have called our department heads together and said this: 'Pretend the PTO doesn't exist,'" says Rogan. "'Start from scratch. Start the office like a business. Assume we have worldwide competitors. Assume our job is to incentivize people to create a free environment. See if we can come up with a new menu instead of relying on an old model. Our goal is to be more efficiently productive.'"

Maybe so. Certainly, as preposterous and bedeviling as the system seems, it is also deeply inspiring. A short walk from Nolan's small office is the system's enormous library, housing the 30 million documents--all related to the 6.3 million granted patents--in closely spaced stacks. There is a hush in the room: 30 million horizontal pamphlets muffle the noise. A walker in the stacks pauses before the more than 6.3 million "eureka" moments, 6.3 million occasions when someone officially heard they had furthered our industrial art and science, in whatever grand or minute fashion.

The stacks are arranged by topic, without a clear sense of time or sequence: A patent pulled here is an electric circuit from 1951, there a milling gear from 1858.

The main idea is invention, of trying something new--which is right, and matters more than all the legal assistants who wander the stacks, looking for an angle. For all the flaws and problems, the ruling spirit of the stacks is marketplace innovation, the same as it was the day Thomas Jefferson first squinted at somebody's idea of trying things differently.